Trade dress is defined as the overall “look and feel” of a product and may include features such as size, shape, color, design, and texture. Trade dress can therefore, include things such as the design of a product, the packaging in which a product is sold, the color of a product or of the packaging in which a product is sold, and the flavor of a product. While trade dress can be protected with or without formal registration, formal registration with the United States Patent and Trademark Office (USPTO) offers several advantages including: constructive notice of one’s ownership claim and nationwide priority over subsequent users; prima facie evidence of one’s exclusive right to use the trade dress; a shift in the burden to the second comer to challenge the validity of one’s registration; and an incontestable status after five years.
There are, however, two primary issues that must be considered when applying for trade dress protection. These include:
- functionality; and
- distinctiveness (which can be inherent distinctiveness, or acquired distinctiveness namely secondary meaning).
With regard to the first issue, trade dress protection is not available if a product design is considered to be functional. However, even if a product design is not functional, the applicant must show that the product design is distinctive.
The recent case of Tractel, Inc. v. Wuxi Shenxi Construction Machinery Co., LTD. is notable for a couple reasons. Case No. 10-17007 (9th Cir. Feb. 7, 2012). First, decisions in trade dress cases are relatively rare. The plaintiff (“Tractel”) in the case is a manufacturer of a traction hoists, which are typically used for commercial building projects and external maintenance, like window washing. Tractel brought suit against the defendant (“Wuxi Shenxi”), another manufacturer of traction hoists, claiming: infringement of Tractel’s trade dress under the Lanham Act; federal unfair competition; and related state law trade dress and unfair competition claims.
In the case, Tractel essentially claimed that the overall exterior appearance of its hoist is nonfunctional because “the hoist’s design -wherein the component parts meet each other at right angles – demonstrates a ‘cubist’ look and feel.” The court pointed out that Tractel bore the burden of proving non-functionality and rejected Tractel’s arguments that its design was nonfunctional, stating:
[T]here is no evidence that anything about the appearance exists for any nonfunctional purpose. Rather, every part is…functional. A piece of industrial machinery with “rectangular” components that meet each other at “right angles,” without more, is wholly insufficient to warrant trade dress protection. It is not enough to say that the design portrays a “cubist” feel – so does a square table supported by four legs….Tractel provides no other evidence of fanciful design or arbitrariness.
The court noted that Tractel did not seem to understand that functional features could not be protected under trade dress law simply because the features were visually distinguishable from other competitors’ offerings; the features also had to be nonfunctional.
The court’s decision, however, is even more noteworthy because it affirmed the lower court’s finding that the case was “exceptional” for purposes of awarding attorney’s fees to the defense, based on Tractel’s “utter failure of proof” to support its nonfunctionality arguments. The court found Tractel’s suit unreasonable, based largely on the finding that even after two years of discovery and numerous depositions, it was unable to produce any evidence to support its claims. Tractel, furthermore, should have been put “on notice” that it did not have a colorable claim after a district court denied Tractel’s motion for a preliminary injunction based on the finding that there was nothing “arbitrary, incidental or ornamental” about its design.